I believe that today was the first time that I’ve seen the Federal Circuit issue a no-opinion affirmance in a case that included three amicus briefs along with briefs from three parties. The case, New Vision Gaming v. LNW Gaming, 20-1400 (Fed. Cir. 2024).
New Vision sued Bally Gaming and others in Nevada District Court, alleging infringement of two patents. US7451987 and US7325806. The claims are directed to a card game – such as blackjack – that allows for a bonus wager based upon a combination of cards from two or more dealt hands.
The accused infringers petitioned for covered business method review (CBM) back in 2018. Back in 2020, the PTAB invalidated all the claims for lack of eligibility — a holding that has been in limbo for a while post-Arthrex. And, the Federal Circuit here has finally affirmed the PTAB ruling.
On appeal, the patentee focused on a procedural arguments – arguing that unconstitutional biases ingrained in the PTAB review process and the PTAB failed to properly consider the forum selection clause requiring litigation in Nevada courts
On the first due process argument, the patentee argued that the PTAB’s structure for instituting and funding is impermissible “structural bias” in a way that violates due process under the principles established in Tumey v. Ohio and related cases. The basic idea here is that there are financial incentives tied to granting AIA petitions, mixing of administrative/financial and judicial roles, and compromises to APJ independence. This creates actual bias or at least the appearance of bias. Notably here, the PTAB’s heavy reliance on user fees, bonus systems tied to productivity quotas, and other unique features distinguish it from other agencies where due process challenges have failed. The briefing points to the GAO Report and other analyses that tend to show inappropriate influence exerted on PTAB judges. Three amicus briefs, by US Inventor, Centripetal Networks, and Ron Katznelson support these arguments.
The Federal Circuit previously decided a case on this issue — Mobility Workx LLC v. Unified Patents LLC, 15 F.4th 1146 (Fed. Cir. 2021). In its briefing, the patentee attempts to distinguish that case because of “new developments and insights,” including the GAO Report.
The case also included a forum selection clause requiring litigation of disputes in Nevada Courts. But, the PTAB refused to terminate the case – finding that New Vision had failed to prove “contractual estoppel.” On appeal, the patentee argued that the PTAB improperly shifted the burden to the patentee to prove estoppel.
As mentioned, the Federal Circuit did not draft any opinion, but rather issued a R.36 affirmance without opinion. The PTO’s arguments were likely successful, including its argument that the structural due process argument had been waived because it was not raised before the PTAB at the appropriate time. The PTO also tied the decision to the Mobility Workx precedent that had concluded APJ salaries/bonuses are not tied to outcomes.
Regarding the forum selection clause, the PTO argued that New Vision should have sought to enforce its forum selection clause by asking a district court for an injunction against the CBM proceeding. At this point though, the institution decision is unappealable, and so the court cannot review the PTAB’s assessment of how that clause impacts its institution discretion.
What do you think of claim 1:
1. A method of playing a game with at least one deck of cards, said game comprising the steps of:
(a) affording a player the opportunity to place a bonus wager;
(b) dealing out said cards to each of a plurality of hands;
(c) forming a bonus hand from at least one of said cards from each of a subset of said plurality of hands;
(d) identifying said player as a winning player if said player placed said bonus wager and said bonus hand has a predetermined rank; and
(e) paying said winning player a payout.
I have a poll running on LinkedIn on whether card-game patents should be patent eligible: Include Your Vote.
It’s old common general knowledge among appellate attorneys that attacking the judges below with presumed but unproven bias allegations, without also showing clearly biased erroneous decisions, is suspect by the appellate judges and unhelpful, as PTAB appeals with those allegations show. A famous example is the CAFC appeal in the huge Polaroid patent suit success against Kodak.
P.S. I do not want to encourage further trashing of the comments section of this PATENT blog with political exchanges, but the above is also relevant to certain widely reported current lawsuits and appeals with many attacks on judges and the judicial system.
As long as we are not adding political exchanges, this is a quick expedient offered in the hopes of diminishing a well-known and established bias among attorneys, that has – among such as Wt – mired in Sprint Left, as the summary at the link actively portrays the essence of denialism clearly captured in this small snippet (which indicates the far more in-depth treatment that is also summarily dismissed):
link to youtube.com
Ah, wouldn’t it be lovely to be able to surmount such obviously entrenched and lack-of-objective political tactics?
If Special K is involved, then you know it’s serious. 😂
Sure, why not.
Purported invention? Stoplight.
Is it a method? No, it’s a big yellow light fixture.
Eligible.
See, easy!
and yet again, you
F
A
I
L
to understand the patent law context of utility.
The stoplight was for you to stop your nonsense. Your hobby horse just does not match patent law, nor the foundations of patent law.
hmmmmmm
Method? Yes
Result of method some item of information? Yes (“winner” of the hand)
Utility realized in a human mind? Yes (dealer knowledge of winner to pay out the hand)
Ineligible.
Would it be eligible if it were a video blackjack machine? Let’s see
Method? Yes
Result of method some item of information? Yes (“winner” of the hand)
Utility realized in a human mind? No (machine knowledge of winner to pay out the hand)
Eligible
Obvious to any PHOSITA of making video game payout equipment? Yes
Massive prior art of machines paying identified winners? Yes
Easy peasy & fair to everyone.
Stoplight.
Next.
I am not a big fan of your proposed methodology, Martin, but here I take issue with your characterization of the “utility” of the machine-implemented method and where that “utility” is recognized. The result of the method is not “information” but “payout”. That “payout” is an abstraction that has meaning to humans, not machines.
I agree that the bigger point to take home here is that these claims are not just ineligible but also appallingly obvious (as are 99.99999999999% of any allegedly “new” methods of gambling) and everyone involved with these claims should be ashamed of themselves.
Of course the claims are utter rub bish. Anyone who thinks otherwise is either being paid to do so or completely unaware of what a rational patent system means.
How do you feel about a notion of proximate (or a chain of) utility?
As in: inventions (tools in general) provide different kinds of utility in different contexts, e.g. a hammer’s most proximate utility is to pound things, a slightly less proximate utility in pulling bent nails, and a further lesser utility to hold down your napkin on a windy day. They are all useful attributes, but getting further from the core of the invention’s most useful purpose.
Likewise the blackjack method- finding a winner is the more proximate utility to making the payout, because no winner, no payout.
Not putting words in your name, but we seem to both agree that logic and information should not be in the patent system at all. But I recognize that manyreasonable people belive otherwise.
My hobbyhorse exists to accommodate that belief in a reasonable way. I’m open to other ideas.
Ultimately every patent system will be subjective at the edges. It has to be, because obviousness and PHOSITA are spectrum concepts- at the edges. I think utility is too. The idea is to expand the heartland of reasonably objective area and stretch the edges farther out.
I think what we have now is unjust because while not entirely random, it’s still far too random and the subjective edges are encountered far too often when utility arises from logic and information.
“Finding a winner” is an abstraction, regardless of whether a computer performs the task or a human performs the tax. It’s the sort of abstraction that should be kept out of the patent system not just because it’s abstract but because it’s the sort of endeavor that isn’t promoted by the granting of patents. It’s just a time and money waster and an attractant for grifters and con artists.
How is a task an abstraction?
Do you view ALL methods as abstractions?
Determined: You are not a winner.
I am pretty sure there is Case Law regarding holding back on a better product is what you did to me with 5,832,857. Evrn selling what you took from me without a patent filing.
Your “Determined” is nothing more than your feeling.
Your feeling is noted.
As is the fact that you have not answered this (and other) question(s).
So, once again,
How is a task an abstraction?
Do you view ALL methods as abstractions?
Comments are closed.